Australian Therapeutic Supplies Pty. Ltd.v.Naked TM, LLC

Trademark Trial and Appeal Board

Dec 21, 2018

CANC (T.T.A.B. Dec. 21, 2018)

This Opinion is a
Precedent of the TTAB

Mailed: December 21, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Australian Therapeutic Supplies Pty. Ltd.
v.
Naked TM, LLC
_____

Cancellation No. 92056381
_____

Drew Smith and Gabrielle A. Holloway of Holley & Menker, PA,
for Australian Therapeutic Supplies Pty. Ltd.
Suzanne D. Meehle and Davey T. Jay of Meehle and Jay,
for Naked TM, LLC.
_____

Before Kuhlke, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Naked TM, LLC (“Respondent”) owns Registration No. 3325577 for the mark
NAKED (typed drawing) for “condoms,” in Class 10.1
Australian Therapeutic Supplies Pty. Ltd. (“Petitioner”), alleging prior use of the
mark NAKED and NAKED CONDOMS both for condoms, filed a petition to cancel
Respondent’s registration on the grounds of fraud, likelihood of confusion, and false

1 Registered October 30, 2007; renewed.
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suggestion of a connection.2 Petitioner filed an Amended Petition for Cancellation
adding the ground that Respondent did not possess the requisite bona fide intent to
use the mark NAKED when it filed the underlying application for the registration at
issue.3
Respondent, in its Amended Answer, denied the salient allegations in the
Amended Petition for Cancellation and asserted several affirmative defenses.4
During the prosecution of this proceeding, Respondent filed a motion for summary
judgment on its affirmative defenses of estoppel, laches, acquiescence, and unclean
hands.5 In its response, Petitioner cross-moved for summary judgment on its pleaded
claim of likelihood of confusion under Trademark Act 2(d), 15 U.S.C. § 1052(d), and
further asserted that Respondent’s affirmative defenses are not applicable because
the use of Respondent’s mark would result in inevitable confusion with Petitioner’s
mark.6 Respondent, in its reply brief, also opposed Petitioner’s motion for summary
judgment on the likelihood of confusion claim.7
In its March 3, 2016 Order, the Board held:8

2 Because the petition for cancellation was filed on October 29, 2012, within five years of the
registration date, likelihood of confusion is not time-barred. Trademark Act § 14(1); 15 U.S.C.
§ 1064(a).
3 24 TTABVUE 10. The Amended Petition is the operative pleading in this case.
4 37 TTABVUE.
5 42 TTABVUE.
6 52 TTABVUE.
7 54 TTABVUE.
8 56 TTABVUE.
Cancellation No. 92056381
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• There are genuine disputes of material fact with respect to Petitioner’s
standing;9
• There are genuine disputes of material fact with respect to Respondent’s
affirmative defense of contractual estoppel;
• If Petitioner is able to establish its standing and priority, then confusion is
likely and inevitable; and
• Respondent’s motion for summary judgment on its affirmative defenses of
laches, acquiescence and equitable estoppel, as well as unclean hands are
denied on the ground that they are inapplicable because confusion is
inevitable.10
The Board expressly set forth the status of the case:
The case will go forward on Petitioner’s proof of standing;
on its claim of priority as a prerequisite to its claim of
likelihood of confusion; and on its claims of false suggestion

9 Because the Board found that there are genuine disputes of material fact regarding
standing, we did not decide the issue of priority. 56 TTABVUE 12.
10 As the Board explained in a prior order, contractual estoppel is not obviated by inevitable
confusion because it is a threshold inquiry as to whether Petitioner lacks a “real interest” in
seeking cancellation of Respondent’s registration. 56 TTABVUE 17 n. 10.
As noted earlier, Respondent’s estoppel defense encompasses
both contractual estoppel and equitable estoppel. Only the
defense of equitable estoppel is negated by inevitable confusion.
As noted in our discussion of Petitioner’s standing, the issue of
contractual estoppel is effectively a threshold inquiry into
whether or not the parties entered into an enforceable
agreement such that Petitioner now lacks a “real interest” in
seeking cancellation of Respondent’s registration or has
“contracted away” its right to seek cancellation. Respondent’s
contract-based challenges to Petitioner’s standing and claims
survive our decision here.
Id.
Cancellation No. 92056381
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of a connection under Trademark Act Section 2(a), and lack
of bona fide intent under Trademark Act Section 1(b).
Respondent’s second affirmative defense (estoppel)
remains operative to the extent it is based on the disputed
agreement between the parties. Respondent’s sixth
affirmative defense (failure to state a claim under Section
2(a) upon which relief may [be] granted); seventh
affirmative defense (abandonment); and ninth affirmative
defense (Petitioner lacks standing), similarly remain
operative.11
The Board also advised the parties:
In view of our contingent finding of likelihood of confusion
and inevitable confusion, trial evidence and briefing on the
issue of likelihood of confusion vis-à-vis the DuPont factors
are not necessary. The parties are advised to focus their
efforts at trial on the issues of standing (i.e., whether or not
Petitioner is contractually estopped from asserting a “real
interest” as a basis for damage or maintaining this
cancellation action) and priority.12
An element in any likelihood of confusion case is whether plaintiff has a
proprietary right in its pleaded mark. Because Petitioner filed its petition for
cancellation on the basis of its unregistered NAKED and NAKED CONDOM
trademarks, Petitioner must establish proprietary rights in those pleaded common-
law marks. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40,
43 (CCPA 1981).
Under the rule of Otto Roth, a party opposing registration
of a trademark due to a likelihood of confusion with his own
unregistered term cannot prevail unless he shows that his
term is distinctive of his goods, whether inherently or
through the acquisition of secondary meaning or through

11 56 TTABVUE 21.
12 56 TTABVUE 21 n.14.
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“whatever other type of use may have developed a trade
identity.” Otto Roth, 640 F.2d at 1320, 209 USPQ at 43.
Towers v. Advent Software Inc., 913 USPQ F.2d 942, 16 USPQ2d 1039, 1041 (Fed.
Cir. 1990).
In this regard, we note that Respondent’s second and ninth affirmative defenses
are based on facts that implicate whether Petitioner has a proprietary right in its
purported common law rights and, thus, whether it has standing. The gist of
Respondent’s Second Affirmative Defense is that by April 2007, the parties reached
an agreement that Petitioner would not sell NAKED condoms in the United States
and that Petitioner is estopped from seeking to cancel Respondent’s registration.13
With respect to the Ninth Affirmative Defense, Respondent averred that because
Petitioner agreed not to sell NAKED condoms in the United States, Petitioner does
not have standing.14
However, it has been observed that “[a]n analysis of standing does not include an
analysis of equitable defenses.”15 Official Committee of Unsecured Creditors v. R.F.
Lafferty & Co., Inc., 267 F.3d 340, 346 (3d Cir. 2001). In view thereof, we view these
allegations also as denials of Petitioner’s standing that leave Petitioner to its proof of
standing. Id. (appellate court analyzed both standing and equitable defense together
because they formed the basis of the District Court’s judgment); see also Fahmy v.
Jay Z, et. al., 908 F.2d 383, 394 (9th Cir. 2018) (entering judgment as a matter of law

13 37 TTABVUE 5.
14 37 TTABVUE 10.
15 Amended Petition for Cancellation ¶¶6-11 (24 TTABVUE 7-8).
Cancellation No. 92056381
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for defendants because plaintiff had transferred the right to prepare derivative works
and, thus, lacked standing).
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file.16 The parties introduced the
testimony and evidence listed below:
A. Petitioner’s testimony and evidence.
1. Testimony declaration of Graham Porter, Petitioner’s Managing Director
and co-owner;17
2. Testimony declaration of Christopher Butler, Office Manager at the
Internet Archive, a website that provides access to a digital library of
Internet websites including the Wayback Machine;18
3. Testimony declaration of Jill Potter, custodian of records for PayPal, Inc.;19
4. Testimony declaration of Natalie Bucsko nee Varner, a consumer who
purportedly purchased three packs of condoms on or about April 17, 2003,
through condoms.au.com;20

16 Because Respondent’s registration file is of record by operation of the Trademark Rules of
Practice, there was no need for Respondent to introduce it through a notice of reliance.
120 TTABVUE.
17 79-80 TTABVUE.
18 81 TTABVUE.
19 82 TTABVUE.
20 83 TTABVUE.
Cancellation No. 92056381
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5. Testimony declaration of Sean Hayes, a consumer who purportedly
purchased NAKED condoms through condoms.au.com on or about April 7,
2003;21
6. Notice of reliance on copies of 27 applications filed by Respondent’s
predecessor-in-interest and an affiliated company printed from the USPTO
electronic database;22
7. Notice of reliance on copies of Petitioner’s application Serial No. 78758237
for the mark NAKED CONDOMS for condoms, application Serial No.
85772589 for the mark NAKED for condoms, and Registration No. 3282564
for the mark NUDE CONDOM for condoms printed from the USPTO
electronic database showing their current status;23
8. Notice of reliance on the following items:
a. Respondent’s amended responses to Petitioner’s first set of requests for
admission;24
b. Respondent’s amended responses to Petitioner’s first set of
interrogatories;25

21 84 TTABVUE.
22 85 TTABVUE.
23 86 TTABVUE.
24 87 TTABVUE 6.
25 87 TTABVUE 11.
Cancellation No. 92056381
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c. Respondent’s second amended responses to Petitioner’s first set of
interrogatories;26 and
d. Respondent’s responses to Petitioner’s third set of requests for
admission;27
9. Notice of reliance on the discovery depositions of the following individuals:
a. Jud Ireland, Respondent’s Managing Member;28 and
b. Cindy Mason, Mr. Ireland’s former personal assistant;29
10. Notice of reliance on materials printed from the Internet;30
11. Rebuttal testimony declaration of Graham Porter;31 and
12. Notice of reliance on an article posted on ConsumerReports.org dated
February 2005.32
B. Respondent’s testimony and evidence.

26 87 TTABVUE 20.
27 87 TTABVUE 26.
28 89 and 129 TTABVUE. Despite the fact that very little, if any, of the testimony or the
exhibits constitute trade secret or commercially sensitive information, the excerpts from the
Ireland deposition have been designated confidential in their entirety. Trademark Rule
2.116(g), 37 C.F.R. § 2.116(g), provides, in part, that “[t]he Board may treat as not confidential
that material which cannot reasonably be considered confidential, notwithstanding a
designation as such by a party.” Accordingly, we will not be bound by the parties’ designation.
29 88 TTABVUE 7. It was not necessary for Respondent to file its amended notice of reliance
on the Mason discovery deposition already made of record by Petitioner. 107 TTABVUE.
Trademark Rule 2.120(3)(ii)(7), 37 C.F.R. § 2.120(3)(ii)(7), provides that testimony from a
discovery deposition made of record by one party may be referred to by any party for any
purpose permitted by the Federal Rules of Evidence.
30 90 TTABVUE.
31 127 TTABVUE.
32 130 TTABVUE.
Cancellation No. 92056381
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1. Notice of reliance on excerpts from the Graham Porter discovery
deposition;33
2. Notice of reliance on “Articles of Incorporation with Statement of
Conversion” filed with the Office of the California Secretary of State and
the Office of the Delaware Department of State Division of Corporations;34
3. Notice of reliance on documents obtained from the websites from the
California Secretary of State and Delaware Department of State Division
of Corporations;35
4. Notice of reliance on records from the USPTO database for applications
and registrations for marks consisting of the words NAKED and NUDE
filed by Petitioner;36
5. Notice of reliance on Petitioner’s amended responses to Respondent’s first
set of interrogatories (Nos. 7 and 8)37 and Petitioner’s amended responses
to Respondent’s second set of interrogatories (Nos. 17-19 and 24);38

33 104 TTABVUE. Respondent submitted a condensed version of the transcript rather than
in full-sized format. See Trademark Rule 2.123(g)(1), 37 C.F.R. § 2.123(g)(1) (“The deposition
transcript must be submitted in full-sized format (one page per sheet), not condensed
(multiple pages per sheet).”).
Although Respondent identified specific passages from the deposition upon which it is
relying, Respondent introduced into the record the entire transcript. Accordingly, we consider
the entire Graham discovery deposition as being of record.
34 105 TTABVUE 106. Exhibits E, G, and H filed in this notice of reliance were stricken in
the Board’s January 29, 2018 Order. 118 TTABVUE 3-6.
35 120 TTABVUE.
36 106 TTABVUE.
37 108 TTABVUE 5.
38 108 TTABVUE 24.
Cancellation No. 92056381
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6. Testimony deposition of Jud Ireland, Respondent’s principal;39 and
7. Testimony declaration of Michael Glickman, a former Senior Vice
President of Naked Int’l, Inc.40 and Petitioner’s cross-examination
testimony deposition.41
II. Standing
A threshold issue in every inter partes case is the plaintiff’s standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). To establish standing in an opposition or
cancellation proceeding, a plaintiff must prove that it has “both a ‘real interest’ in the
proceedings as well as a ‘reasonable’ basis for its belief of damage.” See Empresa
Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (TTAB 1982).
While Petitioner has proven that it has advertised and sold NAKED condoms in
the United States through Petitioner’s websites since April 2003,42 Respondent
argues that Petitioner has contracted away its standing, i.e., Petitioner’s “real

39 109 TTABVUE. Respondent unnecessarily filed the Ireland deposition a second time at
112 TTABVUE.
40 110 and 111 TTABVUE.
41 126 TTABVUE.
42 Porter Testimony Decl. ¶¶17-18, 23, 25-30 and Exhibits 7 and 9-13 (79 TTABVUE 6, 62
and 69-277).
Cancellation No. 92056381
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interest,” contending that the parties agreed that Petitioner would use and register
NUDE for condoms while Respondent would use and register NAKED for condoms.
The Board is an administrative tribunal with jurisdiction over the question of
registrability of U.S. trademarks. See Section 17 of the Trademark Act, 15 U.S.C.
§ 1067. The Board is empowered to determine only the right to register. Sections
17- 18, 20 and 24 of Trademark Act, 15 U.S.C. §§ 1067-68, 1070, 1092; see also, e.g.,
Conolty v. Conolty O’Connor NYC LLC, 111 USPQ2d 1302, 1309 (TTAB 2014).
However, the Board may consider the terms of a contract if, and to the extent that,
construction of the contract is necessary to a decision on matters within the Board’s
jurisdiction. See Selva & Sons, Inc. v. Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ
641, 647 (Fed. Cir. 1983); M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086,
1094-95 (TTAB 2001); see also Renaissance Rialto Inc. v. Boyd, 107 USPQ2d 1083,
1086 (TTAB 2013) (interpreting contract to find no transfer of rights such as would
allow named opposer to bring opposition). In that context, the Board may, in the
exercise of its statutory jurisdiction, consider an agreement, its construction, or its
validity, “although other courts would be the proper tribunals in which to litigate a
cause of action for enforcement or breach of [that] contract.” Selva & Sons, Inc., 217
USPQ at 647.
The Court of Customs and Patent Appeals, the predecessor to our primary
reviewing court, rejected an argument that a promise not to register a trademark is
unenforceable as contrary to public policy favoring the litigation of challenges to
trademark validity. The court held that any such policy is outweighed by the policy
Cancellation No. 92056381
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favoring settlement of threatened or pending litigation: “If there be a policy favoring
challenges to trademark validity, it too has been viewed as outweighed by the policy
favoring settlements.” Wells Cargo, Inc. v. Wells Cargo, Inc., 606 F.2d 961, 203 USPQ
564, 568 (CCPA 1979) (citing Danskin, Inc. v. Dan River, Inc., 498 F.2d 1386, 182
USPQ 370, 372 (CCPA 1974) (affirming grant of summary judgment dismissing
opposition based upon a prior written settlement agreement that was signed by both
parties)); see also Ron Cauldwell Jewelry Inc. v. Clothestime Clothes Inc., 63 USPQ2d
2009, 2013 (TTAB 2002); M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d at 1088.
Under certain circumstances a consent to register a mark may be implied from a
consent to use the mark. See, e.g., Richdel, Inc. v. Mathews Co., 190 USPQ 37, 41-42
(TTAB 1976); CBS, Inc. v. Man’s Day Publ’g Co., Inc., 205 USPQ2d 470, 476 (TTAB
1980) (dismissing opposition because opposer consented to and encouraged
applicant’s use of the mark MAN’S DAY).
In this case, there is no formal written agreement; however, the Board recognizes
oral and informal agreements. See e.g., Nestle Co. Inc. v. Nash-Finch Co., 2 USPQ2d
1085 (TTAB 1987) (written license not required); John Anthony, Inc. v. Fashions by
John Anthony, Inc., 209 USPQ 517 (TTAB 1980) (oral license between employer and
former employee). The elements necessary to determine that a contract exists are: (1)
mutuality of intent to contract; (2) consideration; and (3) lack of ambiguity in offer
and acceptance. See D & N Bank v. U.S., 331 F.3d 1374, 1378 (Fed. Cir. 2003); Ace-
Federal Reporters, Inc. v. Barram, 226 F.3d 1329, 1332 (Fed. Cir. 2000) (“to be valid
and enforceable, a contract must have both consideration to ensure mutuality of
Cancellation No. 92056381
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obligation and sufficient definiteness so as to provide a basis for determining the
existence of a breach and for giving an appropriate remedy.”) (internal citations
omitted).
We review the relevant actions and communications between the parties to
determine whether the parties had reached an agreement regarding their respective
use and registration of the NAKED trademark. The communications were by email
between the principals of the parties.
• Petitioner advertised the sale of NAKED condoms on its condoms.au.com
website as of August 11, 2002;43
• Petitioner sold and shipped NAKED condoms to purchasers in the United
States as of April 3, 2003;44
• Between 2003 and 2015, Petitioner never had more than 48 consumers for
NAKED condoms in the United States in any one year via Internet sales;45
• On September 22, 2003, Respondent filed its application for the registration
at issue;46

43 Porter Testimony Decl. Exhibit 7 (79 TTABVUE 62-65).
44 Porter Testimony Decl. Exhibit 9 (79 TTABVUE 70). See also Porter Testimony Decl.
Exhibits 10 and 11 (79 TTABVUE 182-190).
45 Petitioner’s amended response to Respondent’s interrogatory No. 17 (108 TTABVUE 29-
30).
46 Respondent filed a statement of use on June 19, 2007, alleging first use as of April, 2007.
Cancellation No. 92056381
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• On November 21, 2005, Petitioner filed intent-to-use application Serial No.
78758237 for the mark NAKED CONDOMS (condoms disclaimed) for
“condoms, including condoms made of latex,” in Class 10;47
• On November 21, 2005, Petitioner filed application Serial No. 78757257 for
the mark NUDE CONDOM (condom disclaimed) for “condoms, including
condoms made of latex,” in Class 10, under Section 44(d) of the Trademark
Act and intent-to-use;48
• Petitioner learned about Respondent and its application for the NAKED
trademark in the United States at least as early as November 22, 2005;49
• On July 26, 2006, Petitioner emailed Respondent informing Respondent
that Petitioner has been marketing NAKED condoms in the United States
via the Internet prior to the filing of Respondent’s application, opening
negotiations to resolve the NAKED trademark issue, including assigning
Petitioner’s application for NUDE CONDOM to Respondent;50
• On September 6, 2006, Respondent emailed Petitioner inquiring about the
status of Petitioner’s NAKED trademark and expressing concern and doubt
about whether both parties can use NAKED for condoms in the United
States;51

47 86 TTABVUE 7. The application was abandoned on September 28, 2011.
48 86 TTABVUE 38. Registered under Reg. No. 3282564 on August 21, 2007, renewed.
49 Porter Testimony Decl. Exhibit 22 (79 TTABVUE 345).
50 Porter Testimony Decl. Exhibit 25 (79 TTABVUE 352).
51 Porter Testimony Decl. Exhibit 27 (79 TTABVUE 357).
Cancellation No. 92056381
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• On September 11, 2006, Petitioner emailed Respondent informing
Respondent that the distribution of Petitioner’s FOUR SEASON NAKED
condoms “has been going very well” and that because neither party appears
willing to relinquish its right to use the NAKED trademark, Petitioner has
authorized its lawyers to draft a coexistence agreement;52
• On December 18, 2006, Petitioner emailed Respondent a draft copy of the
coexistence agreement.53 The draft agreement provides, in essence, that
 Petitioner shall not use NAKED or NUDE in the United States other
than as a subbrand for its core FOUR SEASONS mark; and
 Respondent shall not use or register any marks that are similar to
Petitioner’s non-NAKED marks;54
• On January 3, 2007, Respondent emailed Petitioner a counterproposal that
“would be the basic terms of a final written agreement” providing that: (i)
Petitioner will not use or register any mark containing the word NAKED in
the United States and (ii) Respondent will not use or register any mark
containing the word NUDE in the United States;55

52 Porter Testimony Decl. Exhibit 27 (79 TTABVUE 356).
53 Porter Testimony Decl. Exhibit 28 (79 TTABVUE 361-370).
54 Porter Testimony Decl. Exhibit 28 (79 TTABVUE 364-365).
55 Porter Testimony Decl. Exhibit 30 (79 TTABVUE 374).
Cancellation No. 92056381
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• On April 4, 2007, the parties exchanged emails. Respondent told Petitioner
that Respondent was “coming to market” and that they should put their
agreement “on paper.”56 Petitioner replied
[N]o need to put anything on paper. Just makes lawyers a
lot of money. We no longer have any Naked condoms in the
USA, so it should be clear sailing for you. Good luck with
the launch.57

56 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 295) (80 TTABVUE 263).
Petitioner did not introduce the email referred to in the testimony. Porter Testimony Decl.
Exhibit 51 is the Graham Porter discovery deposition. The April 4, 2007 emails were
identified as Porter Discovery Exhibit 44. Porter Discovery Exhibit 44 was not made of record.
57 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 295) (80 TTABVUE 264). Mr.
Porter testified that when he wrote that email, he did not mean that the parties had an
agreement. To the contrary, Mr. Porter testified that “I didn’t want an agreement in writing
that would give away my rights to that [the NAKED trademark].” 80 TTABVUE 266.
Q. When you said, “We no longer have any Naked condoms
in the USA, so it should be clear sailing for you,” what did
you mean by that?
A. What I meant by that is I have made a decision at this
time once we [Petitioner] found a new supplier that we
[Petitioner] were going to market Nude from ATS, Inc.
and Naked from ATS Australia.
Q. Let’s focus on these words “so it should be clear sailing
for you.” What do these words mean, “so it should be clear
sailing for you?” When you wrote that to my client, what
were you telling him?
A. That he [Respondent] was going to market with his
[Respondent’s] Naked condoms.
Q. … Wasn’t it your intention in using these words that you
were no longer going to interfere with his sale of Naked
condoms in the USA?
A. No, I very much wanted to have a coexistence.
Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 298-99) (80 TTABVUE 266-67).
Cancellation No. 92056381
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• On August 21, 2007, Petitioner’s application Serial No. 78758257 for the
mark NUDE CONDOM registered as Registration No. 3282564;58
• On October 30, 2007, Respondent’s application Serial No. 78303400 for the
mark NAKED registered as Registration No. 3325577, the registration at
issue;59
• On March 12, 2011, Respondent emailed Petitioner thanking Petitioner “for
discontinuing your sub brand naked” and asking Petitioner to remove
NAKED condoms from its TWITTER site because it was causing
confusion;60
• On March 13, 2011, Petitioner emailed Respondent pointing out that
Petitioner has been using the NAKED brand in Australia before
Respondent began using the NAKED brand and that since Petitioner
“helped out last time it would be great if [Respondent] could take down
[Respondent’s] twitter site as a small favor to [Petitioner].” In closing,
Petitioner asked “How are the Naked condoms going?”61

58 86 TTABVUE 38. The application was published for opposition on February 13, 2007. No
one filed an opposition to the registration of Petitioner’s mark. 86 TTABVUE 40.
59 Respondent’s application was published for opposition on June 8, 2004. No one filed an
opposition to the registration of Respondent’s mark.
60 Porter Testimony Decl. Exhibit 35 (79 TTABVUE 389).
61 Porter Testimony Decl. Exhibit 35 (79 TTABVUE 388).
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• On March 14, 2011, Respondent emailed Petitioner acknowledging
Petitioner’s rights to the NAKED brand in Australia but pointing out that
Petitioner’s FOUR SEASONS brand appears to be Petitioner’s main focus;62
• On August 31, 2011, Respondent emailed Petitioner stating that
Respondent’s launch of NAKED condoms was going well, that Respondent
is selling worldwide except for Australia, and asking Petitioner to transfer
its rights to NAKED to Respondent;63
• As of September 3, 2011, Petitioner abandoned application Serial No.
78528237 for the mark NAKED CONDOMS;64
• On September 4, 2011, Petitioner emailed Respondent stating that
Petitioner “still get[s] lots of requests for NAKED in the USA” and that
Petitioner will not transfer any rights;65

62 Porter Testimony Decl. Exhibit 35 (79 TTABVUE 387).
63 Porter Testimony Decl. Exhibit 36 (79 TTABVUE 391).
64 86 TTABVUE 7. Despite Petitioner’s assertion that it was still selling NAKED condoms in
the United States via the Internet and despite Petitioner’s prior of use of the NAKED mark,
Petitioner expressly instructed counsel to abandon the NAKED CONDOMS trademark
application because a registration “wasn’t required for the product at the time” due to the
global financial crisis. Also, it allowed Petitioner “to stall for time.” Porter Discovery Dep., p.
340-41 (104 TTABVUE 90). If, as Petitioner asserts, the parties only had an agreement to
coexist and were in negotiations for a more comprehensive agreement, it would seem to
undercut Petitioner’s position that that Petitioner would allow its application for NAKED
CONDOMS to go abandoned rather than use it for whatever leverage it may have in those
negotiations.
65 Porter Testimony Decl. Exhibit 36 (79 TTABVUE 391). As noted above, Petitioner never
had more than 48 consumers via Internet sales in any year. Petitioner’s amended response
to Respondent’s interrogatory No. 17 (108 TTABVUE 29-30). In 2010, Petitioner had “at least
25” customers and in 2011 Petitioner had “at least 48” customers. Id.
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• On September 5, 2011, Respondent emailed Petitioner offering to acquire
Petitioner’s rights to the NAKED mark in Australia;66
• On September 20, 2011, Petitioner emailed Respondent stating that
Petitioner has been using the NAKED mark for “a lot longer than
[Respondent] in the USA via [Petitioner’s] direct selling into the USA from
years ago.”;67
• On September 21, 2011, Respondent emailed Petitioner stating that
because the parties had agreed that Petitioner would use the NUDE
trademark and Respondent would use the NAKED trademark and because
Respondent has registered the NAKED mark in approximately 36
countries, Petitioner should stop selling NAKED condoms in the United
States via the Internet;68 and
• On September 21, 2011, Petitioner emailed Respondent stating that “We
have no agreement in place other than we agreed to co-exist.”69
Petitioner’s actions and communications led Respondent to believe that the
parties agreed that Petitioner would not use or register the mark NAKED in
connection with condoms in the United States and that Respondent could use and
register the mark NAKED in the United States. Specifically,
• In the April 4, 2007 email exchange Petitioner wrote

66 Porter Testimony Decl. Exhibit 37 (79 TTABVUE 395).
67 Porter Testimony Decl. Exhibit 38 (79 TTABVUE 399).
68 Porter Testimony Decl. Exhibit 38 (79 TTABVUE 398).
69 Porter Testimony Decl. Exhibit 38 (79 TTABVUE 398).
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[N]o need to put anything on paper. Just makes lawyers a lot
of money. We no longer have any Naked condoms in the USA,
so it should be clear sailing for you. Good luck with the
launch.70
Thus, Petitioner expressly stated that it no longer had any NAKED condoms
in the United States. But more telling, Petitioner did not inform Respondent
that it had any plans to continue selling NAKED condoms in the United States
via the Internet from Australia;
• In the March 2011 email exchange regarding the confusion caused by
Petitioner’s use of the NAKED trademark on its TWITTER account, when
Respondent thanked Petitioner “for discontinuing your sub brand naked,”
Petitioner did not correct Respondent and explain that Petitioner believed it
retained the right to sell NAKED brand condoms in the United States via the
Internet. In fact, Petitioner said that because it “helped out the last time”
presumably meaning that because Petitioner stopped using NAKED in the
United States, Respondent should take down its TWITTER site;
• As of September 3, 2011, Petitioner abandoned application Serial No.
78528237 for the mark NAKED CONDOMS; and
• Throughout all of the communications between Petitioner and Respondent,
Petitioner never stated or reminded Respondent that Petitioner was retaining
the right to sell NAKED condoms in the United States via Internet sales from
Australia.

70 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 295) (80 TTABVUE 264).
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The evidence shows that the parties reached an agreement. The mutuality of
intent to contract is satisfied because the parties recognized their trademark issue
and they communicated and exchanged offers to resolve it. The consideration for the
contract is Petitioner’s agreement not to use or register the NAKED trademark for
condoms in the United States and Respondent’s agreement not to use or register the
NUDE trademark for condoms. Finally, the lack of ambiguity in offer and acceptance
is evidenced by the facts that Petitioner stopped using the NAKED mark in the
United States, Petitioner did not interfere with Respondent’s use and registration of
the NAKED mark in the USPTO, Petitioner registered the NUDE trademark in the
United States, and Respondent did not interfere with Petitioner’s use and
registration of the NUDE trademark in the USPTO.
That we are dealing with an informal or oral agreement or contract rather than a
written contract does not diminish the effect of the agreement. The parties had
reached an agreement as evidenced by the April 4, 2007 email where Respondent told
Petitioner that the parties should put their agreement in writing and that
Respondent wanted it memorialized.71 Petitioner did not object and assert that was
no agreement, rather Petitioner advised Respondent not to get the lawyers involved
to put the agreement in writing.72 If there was no agreement, Petitioner would have
advised Respondent that there was no agreement or at least questioned Respondent
as to why it wrote that there was an agreement. Moreover, there would be no need

71 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 295) (80 TTABVUE 263).
72 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 295) (80 TTABVUE 264).
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for Petitioner to advise Respondent not to get the lawyers involved. Petitioner did not
want to have lawyers formalize a written agreement because Petitioner did not want
Respondent to find out that Petitioner intended to circumvent their oral agreement
and continue selling NAKED condoms in the United States via the Internet. Had
lawyers gotten involved to put the agreement “on paper,” Petitioner surely would
have been forced to expressly state that it was continuing to sell NAKED condoms in
the United States via the Internet. As noted above at footnote 58, Mr. Porter testified
that “I didn’t want an agreement in writing that would give away my rights to that
[the NAKED trademark].”73 But Petitioner never expressed to Respondent that
Petitioner had plans to continue selling NAKED condoms in the United States via
the Internet from Australia.
Graham Porter, Petitioner’s principal, testified that the parties had an agreement
in place for the United States,74 corroborating our finding that the parties reached an
agreement and that Petitioner led Respondent to reasonably believe that Petitioner
had abandoned its rights in the United States to the NAKED mark in connection with
condoms.
Q. You communicated to [Respondent] didn’t you, that
you would agree to adopt Nude and not sell Naked
in the United States?
A. It was part of the negotiation that was still taking
place. Yes.
Q. And you agreed to it?

73 80 TTABVUE 266.
74 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 301) (80 TTABVUE 268).
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A. In essence, I did agree.75
* * *
Q. What was the agreement?
A. The important agreement that we wanted to have
where we would coexist in the marketplace was
[Petitioner] was going to withdraw Naked from
being sold from our USA entity, which, as you have
seen, that the numbers aren’t huge.
Q. And what would [Respondent] do?
A. Nothing. He did nothing.
Q. He let you have Nude; right?
A. Right, and he continued to sell Naked the whole
time.
Q. And you ran with Nude; right?
A. We ran with both.
Q. You ran with Nude - -
A. Nude from the USA and then Naked from Australia.
Q. Notwithstanding that you told him that you no
longer have any Naked condoms in the USA; right?
A. Which is true. We had them in Australia. We
continued selling from Australia.76
As part of the agreement, Respondent would not oppose Petitioner’s pending
application for the NUDE mark.77

75 Porter Discovery Dep., p. 253 (104 TTABVUE 68).
76 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 300-01) (80 TTABVUE 268-
69).
77 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 302) (80 TTABVUE 270) (ATS,
Inc. would not sell any FOUR SEASONS NAKED condoms in the United States and in
exchange, Respondent would not oppose Petitioner’s NUDE application). See also Porter
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Petitioner characterized the agreement as “a gentleman’s agreement.”78
A. We had a gentleman’s agreement that in the USA
[Petitioner] would sell Nude and sell Naked from
Australia. We still hadn’t resolved our agreement.79
* * *
Q. Mr. Porter, you gave the man [Ireland/Respondent]
your word in April of 2007 that you would take Nude
in the U.S., he would take Naked in the U.S., right,
recognizing your caveat that you believe you
retained the right to do Internet sales. But you don’t
dispute that you said, Jud [Respondent], go ahead
and use Naked?
A. I don’t dispute that at all. I don’t think it’s the same
question.
Q. So just explain it. Since we are all in agreement that
you said that to him, I will take Nude, you take
Naked - -
A. And I will sell Naked in the U.S. from Australia.
Q. Tell me why you believe five years after you reached
that agreement with him, five years after he began
investing and spending money and developing the
mark that you had the right to come in and file a
cancellation proceeding to take away that which you
agreed that he could do and which he relied on for
years before you did this. Tell me why you believe
you believe [sic] you had the right to do that.

Discovery Dep., p. 259 (104 TTABVUE 70) (Respondent’s agreement not to object to
Petitioner’s NUDE application was of material consideration to Petitioner).
78 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 353) (80 TTABVUE 275). See
also Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 301-02) (80 TTABVUE 269-
70).
79 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 392) (80 TTABVUE 291).
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A. When he sent this letter, it was basically destroying
any agreement that we had in place as far as I’m
concerned.80
We find the only reasonable interpretation of the entirety of the communications
is that Petitioner agreed not to use the NAKED trademark in connection with
condoms in the United States via Internet sales. Because Petitioner’s Internet sales
in the United States were de minimis, if Respondent even were aware of them, such
sales did not require any action until Petitioner’s TWITTER activities purportedly
caused some instances of confusion.
Petitioner’s standing is intrinsically connected with the question of whether the
parties have an enforceable agreement that precludes Petitioner from using or
registering the mark NAKED or NAKED CONDOMS and from challenging
Respondent’s use and registration of the NAKED mark. Petitioner’s actions and
communications stating that it no longer had any NAKED brand condoms in the
United States so that it should be “clear sailing” for Respondent to launch its NAKED
brand condoms caused Respondent to reasonably believe that any rights Petitioner
had in the NAKED trademark for condoms had been abandoned. Therefore, we find
that Petitioner agreed that it would not use or register the mark NAKED for condoms
in the United States and that Respondent could use and register the mark NAKED
for condoms in the United States. In view thereof, Petitioner failed to prove that it
has standing to cancel the registration because Petitioner does not have a real

80 Porter Testimony Decl. Exhibit 51 (Porter Discovery Dep., p. 432-33) (80 TTABVUE 297-
98). Respondent had its trademark counsel send Petitioner a letter demanding that
Petitioner stop selling NAKED condoms in the United States via the Internet. Porter Decl.
Exhibit 66 (80 TTABVUE 358).
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interest in this proceeding or a reasonable basis for its belief of damage, having
contracted away its right to use and register NAKED and by extension NAKED
CONDOMS. Accordingly, Petitioner lacks standing.
Because Petitioner does not have standing to bring this cancellation, we need not
decide the issues of priority, whether Respondent had a bona fide intent to use
NAKED when it filed its application for registration, or whether Respondent’s use
and registration of NAKED creates a false suggestion of a connection with
Petitioner’s name or identity. See Multisorb Tech., Inc. v. Pactive Corp., 109 USPQ2d
1170, 1171-72 (TTAB 2013) (we have “discretion to decide only those claims necessary
to enter judgment and dispose of the case,” as our “determination of registrability
does not require, in every instance, decision on every pleaded claim.”) (citing Am.
Paging Inc. v. Am. Mobilphone Inc., 13 USPQ2d 2036, 2039-40 (TTAB 1989)), aff’d,
923 F.2d 869, 17 USPQ2d 1726 (Fed. Cir. 1990) (non-precedential).
Decision: The Amended Petition for Cancellation is denied.